Western Tel. Const. Co. v. Stromberg

• Decision Date: 19 February 1895
• Citation: 66 F. 550
• Parties: WESTERN TELEPHONE CONST. CO. v. STROMBERG et al.
• Court: U.S. District Court — Northern District of Illinois

66 F. 550

WESTERN TELEPHONE CONST. CO. v. STROMBERG et al.

United States Circuit Court, N.D. Illinois, Northern Division.

February 19, 1895

Stanley S. Stout (J. H. Raymond of counsel), for complainant.

Barton & Brown, for defendants.

SEAMAN District Judge.

This is a motion for a preliminary injunction to restrain alleged infringement of letters patent No. 504,636 and No. 516,777. The claims of which infringement is asserted read as follows:

In No 504,636, one claim:

'(1) In a telephone, the combination of the pole pieces, d, d with the extensions, f, f, the angular pieces of iron f', f', attached thereto, the helices, g, g, surrounding the ends of said angular pieces, and the diaphragm, h, adapted to vibrate in proximity to said angular pieces of iron, substantially as described.'

In No. 516,777, two claims:

'(1) The combination with a horizontally shifting telephone book, yieldingly maintained at one end of its travel, of a bracket, one edge thereof occupying a position between the members of said hook, whereby the insertion of the telephone receiver between said edge and the outer member of said hook may impart to the hook a transverse movement, substantially as described.

'(2) The combination with a horizontally shifting telephone hook, yieldingly maintained at one end of its travel, of a bracket, one edge thereof occupying a position between the members of said hook and contact points controlled by said telephone hook, substantially as described.'

The complainant relies for an injunction pendente lite upon the following propositions: (1) That the defendants are the patentees to whom both these letters patent were issued, and 'the grantors of the full exclusive license to the complainant' thereunder, and are therefore 'estopped from denying the validity of the face value of these patents'; and, further, that such estoppel prevents inquiry into the prior state of the art, to narrow the construction or scope of the claims, or, as broadly stated in the argument for complainant, that for the purposes of this motion, 'until some further possible showing is made by the defendants, no defense is now open to them.' (2) That infringement is clearly shown.

1. It is the undoubted rule that the defendants, as grantors cannot impeach the validity of the patents, but I am satisfied that the estoppel does not reach to the extent urged by the complainant. The defendants are not precluded from showing the prior state of the art to ascertain 'the nature and extent of the thing granted. ' Babcock v. Clarkson, 63 F. 607, 11 C.C.A. 351; Martin & Hill Cash Carrier Co. v. Martin, 62 F. 272. The cases cited in behalf of complainant do not seem to me to support its contention. Purifier Co. v. Guilder, 9 Fed. 155; Burdsall v. Curran, 31 F. 918; Adee v. Thomas, 41 F. 342, 346; Blount v. Societe, etc., 3 C.C.A. 455, 53 F. 98. They simply exemplify the rule that the grantor cannot deny or question the validity of his grant or title, or set up his own fraud or mistake to defeat or derogate from his grant. The defendants have introduced showing of the prior...